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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
W. & G. Foyle Limited v. Robert G. Foyle
Case No. D2000-1543
1. The Parties
The Complainant is W. & G. Foyle Limited, a private limited company incorporated in England whose registered office is at 113-119 Charing Cross Road, London WC2H 0EB, United Kingdom, represented by Dechert of London.
The Respondent is Mr. Robert G. Foyle of Foyle’s Books Limited, 29 Alpha Avenue, Christchurch 8005, New Zealand, represented by Mardi Lewis, James and Wells of Christchurch.
2. The Domain Name and Registrar
The disputed domain name is <foylesbooks.com> and the Registrar is Network Solutions, Inc., of Herndon, Virginia, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on November 9, 2000 and in hard copy on November 15, 2000. The Center acknowledged receipt on November 16, 2000. On November 20, 2000, the Center sought registration details from the Registrar. On November 20, 2000, the Registrar confirmed that the respondent is the registrant, the Registrar’s 4.0 Service Agreement is in effect (which incorporates the Policy and requires the registrant to submit to a properly initiated complaint under the Policy); and that the status of the disputed domain name is "active."
On November 28, 2000 the Center formally notified the Respondent by post/courier, facsimile and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The formal date of the commencement of the proceeding was accordingly November 28, 2000. The last day specified in the notice for a response was December 17, 2000. On December 15, 2000, a Response was filed by email and on December 19, 2000, in hardcopy. Its receipt was acknowledged by the Center on December 15, 2000.
Without seeking leave to do so, on December 19, 2000 the complainant filed a reply by email and on December 21, 2000 in hardcopy. In Goldline International, Inc. v. Gold Line, (WIPO Case No. D2000-1151) the 3-member panel addressed a similar situation as follows:-
"The Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), though, do not provide the parties with any right to file replies on their own volition. Rather, Rule 12 provides that only the Panel may request further submissions. Plaza Operating Partners, Ltd. v. Pop Data Technologies, Case No. D2000-0166 (WIPO June 1, 2000). Nevertheless, Complainants routinely submit replies, which not only is usually a waste of party resources (not to mention the resources of the Center and Panelists), but also delays the final resolution of the proceeding, which undermines the Policy’s promise of rapid, cost effective dispute resolution. CRS Technology Corp. v. CondeNet, Inc., File No. FA0002000093547 (NAF March 27, 2000). For these reasons, many Panels have held that additional submissions are inappropriate except in the rarest of circumstances, such as discovery of evidence not reasonably available to the submitting party at the time of its initial submission, or arguments by the respondent that the complainant could not reasonably have anticipated. Id.; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO June 6, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000); Wal-Mart Stores, Inc. v. Richard MacLeod, Case No. D2000-0662 (WIPO Sept. 19, 2000); Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF Oct. 11, 2000); Parfums Christian Dior S.A. v. Jadore, Case No. D2000-0938 (WIPO Nov. 3, 2000); Viz Communications, Inc. v. Redsun dba www.animerica.com, Case No. D2000-0905 (WIPO Dec. 22, 2000). Because the Reply in this case presents neither previously-unavailable evidence nor authority, it is stricken and the Panel has disregarded it in its entirety."
In this case the complainant has not contended that it has discovered evidence not reasonably available to it at the time of its Complaint, nor does the Response appear to have raised arguments that the complainant could not reasonably have anticipated. There appear to be no other exceptional circumstances that would justify admission of the Reply. Accordingly the Panel has disregarded the Reply.
On January 3, 2001 the Center notified the parties of the appointment of Alan L. Limbury as the administrative panel, Mr Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated January 16, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.
The language of the proceeding was English.
The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the Response was filed within the time specified by the Rules and the single-member administrative panel was properly constituted.
4. Factual Background
In 1906 William and Gilbert Foyle (from whom the initials in the Complainant’s name were taken) founded a business known as W & G Foyle Ltd., supplying second hand books. In 1914 they opened a bookshop called FOYLES in Charing Cross Road in London, where it remains today. The Foyle family has always been involved in the operation of this business, which in 1966 was described as "the world’s greatest bookshop" and as a "great British institution" (Response, Annex A). It has more recently been described as "possibly the largest and worst organised bookshop in the world" (Response, Annex D).
In 1930 at the age of nineteen, William’s daughter Christina Foyle established the famed "Foyles Literary Luncheons’ at which authors would address notables of the day. She took over the running of the Foyles bookshop when William died in 1963. The bookshop is now owned by the Complainant, which was incorporated on 1 January 1969.
The schools side of the business grew to such an extent that in 1921 Gilbert Foyle set up Foyles Educational Ltd, a subsidiary business within FOYLES, specializing in the sale of books to schools. Foyles Educational Limited operated initially "from a makeshift shed at the back of the Charing Cross Road premises" and remained at those premises for 43 years (Response, Annex A). In 1945 Gilbert Foyle became the sole owner of Foyles Educational Ltd and continued its business from premises within W&G Foyle Ltd. By 1966, Foyles Educational Limited had moved its textbook contracting operations and its showrooms elsewhere and no longer occupied any part of the Foyles bookshop premises in Charing Cross Road.
The Respondent is the grandson of Gilbert Foyle.
The Respondent’s father, John Foyle, joined Foyles Educational Ltd in 1946 and, as Sales Director, expanded sales in both the UK and export markets to the point at which in 1964 it had become the leading national supplier of text and library books to schools and colleges.
In 1975 the Respondent joined Foyles Educational Ltd, and was engaged in sales to the export market. In 1977 Unifoyle Ltd was formed to take control of all export sales. By 1990 the Respondent and his brother, Lance Foyle, were directors of both Foyles Educational Ltd and Unifoyle Ltd, and had moved to New Zealand and Australia respectively to concentrate on sales to the Asia Pacific region.
There is no longer any Foyle family participation in the business of Foyles Educational Ltd. and the Respondent does not have any interest in it.
Since 1995 the Complainant has obtained trade mark registrations for FOYLE and/or FOYLES in Canada, the United States, Australia and the European Community. It has pending applications to register FOYLES in New Zealand and FOYLE and FOYLES in the United Kingdom.
In 1995 the Respondent founded Foyle’s Books Ltd., incorporated in New Zealand, of which he is sole director. On January 28, 1997 that company registered the domain name <foyles.com>, which is the subject of administrative proceeding D2000-1544.
On 22 April 1999 the Respondent registered the disputed domain name <foylesbooks.com> and has used that domain name by linking the web address www.foylesbooks.com to another website, www.robertfoylebooks.com (registered by the Respondent on February 18, 1999), an online bookshop selling British books world-wide under the trading name Robert Foyle Books. The Respondent also owns the domain name <robertfoylebooks.co.uk> (registered on March 5, 1999).
5. Parties’ Contentions
The Complainant is the owner of goodwill and reputation and trade mark rights in the name FOYLES.
FOYLES has an international reputation (including New Zealand) as a quality bookseller, as evidenced by the number of overseas visitors (including those from New Zealand) to the store and by the references to the store in many travel guides. The Complainant also has mail order customers internationally, including in New Zealand.
In addition to its trade mark registrations and applications, the Complainant has acquired reputation and goodwill in the name FOYLES since the inception of the bookstore in 1906. That reputation and goodwill is the result of significant investment and promotion over a long period of time and represents an important and valuable part of the Complainant’s business. This goodwill and reputation is owned internationally including the UK, US and New Zealand.
Identity and confusing similarity
The disputed domain name is conceptually, visually and phonetically similar to the name and trade mark in which the Complainant has extensive legitimate rights.
The domain name was registered 26 years after the Complainant was incorporated and 89 years after the Complainant’s predecessor in title commenced its FOYLES book store business.
The Respondent does not appear to have any legitimate interest in the name FOYLES and/or FOYLES BOOKS.
The Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trade marks (or anything confusingly similar) or to apply for any domain name incorporating any such marks.
The active web-sites are for the business trading as ROBERT FOYLE BOOKS. Whilst Robert Foyle proudly claims a connection with W&G Foyle in London, it is clear that the business is ROBERT FOYLE BOOKS and not FOYLES or FOYLES BOOKS or any other name incorporating FOYLES. This is the case notwithstanding that the Respondent's company name incorporates "Foyle’s".
From the Union Jack flag on the web-site it also appears that this is a British business aimed at the international market.
Given that FOYLES has been used by the Complainant (including its predecessor in title) and is associated with the Complainant and given that the Respondent is a member of the Foyle family, it is reasonable to conclude that in 1999 the Respondent knew or ought reasonably to have known that a third party and in particular the Complainant had rights in the name FOYLES and that FOYLES BOOKS was confusingly similar to FOYLES.
Alternatively the Respondent ought reasonably to have made all reasonable enquires and searches prior to registration of the domain name to ensure that the use of FOYLES and/or FOYLES BOOKS would not or could not infringe the rights of any third party.
Additionally the Respondent ought reasonably to have enquired as to whether FOYLES had been registered as a trade mark by any third party before registering domain name incorporating this name and considered whether FOYLES BOOKS was confusingly similar to that trade mark.
The Respondent’s use of FOYLES and/or FOYLES BOOKS in addition to its use of FOYLE and ROBERT FOYLE demonstrates that the Respondent has made a deliberate attempt to trade off the reputation and trade mark rights in the name FOYLES. It is not accepted that FOYLES and/or FOYLES BOOKS has been used innocently in the possessive sense or in the descriptive sense to indicate ROBERT FOYLE’S BOOKS.
Bad faith registration and use
In view of the fact that the Respondent had no legitimate reason for registering the domain name and deliberately chose to register domain names incorporating FOYLES and the domain name which is conceptually, phonetically and visually similar to FOYLES, as opposed to restricting his registrations to FOYLE or ROBERT FOYLE, it is submitted that it must have therefore been in bad faith and has been used in bad faith.
The Complainant has been in correspondence with the Respondent in relation to this matter since 1999.
In Robert Foyle’s e-mail to the Complainant dated 12 February 1999 Mr Foyle indicated that whilst he had already registered the domain name <foyles.com> he did not want to infringe the Complainant’s trade marks and wanted to reach an agreement in relation to this particular domain name. It is clear from this that he accepted from the outset that the registration and/or use of at least this particular domain name would require the express permission or licence of the Complainant. This is also clear from Mr Foyle’s e-mail of 19 February 1999 in which he proposed that the web-site at this particular domain name should feature only links to Robert Foyle’s business’ web-site and to the Complainant’s business’ web-site.
It is the Complainant’s case that in view of the conceptual, phonetic and visual similarity of FOYLES BOOKS to FOYLES, the same principle should apply in relation to the domain name <foylesbooks.com>.
Following the instruction of solicitors in New Zealand, Robert Foyle wrote on 14 February 2000 confirming that he would trade only under the name ROBERT FOYLE. A deed of settlement was sent to him but to date this has never been signed and Mr Foyle has continued to trade under the name FOYLES and FOYLES BOOKS.
The Respondent has also opposed the Complainant’s trade mark application in New Zealand.
By registering the domain name the Respondent is also preventing the Complainant from reflecting is trade mark in all corresponding top level generic domain names suitable to the nature of its business. As seen above, the Respondent and his company have between them engaged in a pattern of conduct of registering domain names in which they appear to have no legitimate interest. It is submitted that this is sufficient to constitute bad faith registration and bad faith use of the domain name.
The Respondent has intentionally attempting to attract for commercial gain internet users to its web-site by creating a likelihood of confusion with the FOYLES trade mark. Consumers and internet users who type <foylesbooks.com> as a deliberate or mistaken attempt to view the Complainant's web-site are likely to be confused by any web-site that appears at the domain name.
By creating a likelihood of confusion between the domain name and the Complainant's trade mark and business, consumers and internet users are likely to conclude that the web-site at the domain name is in some way associated with the Complainant. This will ultimately benefit the Respondent to the detriment of the Complainant, particularly since the Respondent and the Complainant are engaged in the same field of activity and internet users may be diverted away from the Complainant towards the Respondent’s business.
The Complainant has evidence that confusion has already arisen between the Complainant’s business and the Respondent’s business.
The Complainant also relies on the principle of initial interest confusion as described by the US Courts of Appeal for the Ninth Circuit in Brookfield Communications In v West Coast Entertainment Corporation (Case number 98-56918). The concept of initial interest confusion was adopted by the Sea & Commercial Court of Copenhagen in Denmark when it gave its decision on 8 August 2000 in relation to the domain name <rolex.dk> which had been registered by a party not owning the trade mark rights in ROLEX (Montres Rolex).
In other words, it does not matter that if once an internet user arrives at <foylesbooks.com> he or she then realises that the web-site is not for W&G Foyle Limited. The mere fact that he or she has been diverted towards Robert Foyle Books’ web-site when looking for W&G Foyle Limited is sufficient for there to have been confusion.
The Respondent has registered the domain name with a view to disrupting the Complainant's business and has intentionally attempted to attract for commercial gain internet users to its web-site by creating a likelihood of confusion. The Respondent has been successful in both respects.
It is submitted that this is sufficient to constitute bad faith registration and bad faith use of the domain name.
The Respondent has rights in a trademark or service mark which is identical or similar to a trademark or service mark in which the Complainant has rights. The Respondent has rights and legitimate interests in respect of the domain name. The Respondent has not registered the domain in bad faith and the domain is not being used in bad faith. The Respondent is the owner of goodwill and reputation and trade mark rights in the name FOYLES.
Although W&G Foyle Ltd's bookshop in London was located 1 mile away from the business of Foyles Educational Ltd, there was no confusion between the two separate businesses in over 20 years, despite their close physical positioning.
The Respondent, and customers of both Foyles Educational Ltd and Unifoyle Ltd, commonly referred to those businesses as FOYLES. Whilst the Complainant's branch of the family has used FOYLES in relation to sales and services for books since the founding of W&G Foyle Ltd, so also has the Respondent's branch of the family.
The Complainant alleges that Respondent "does not appear to have any legitimate interest in the name FOYLES and/or FOYLES BOOKS". Given that the Complainant knows the Respondent’s history and reputation for sales of British books world-wide under FOYLES, and given that the Complainant was reminded of the Respondent’s history and current policy in the usage of the name in correspondence in annex H of the Complaint, the Respondent submits that the Complaint was brought in bad faith.
The Complainant’s description of the Respondent’s family background appears to have been deliberately expressed in a manner which is both insouciant and factually incorrect, and appears to be intended to deny the existence of the Respondent’s legitimate interest in the name FOYLES. It is, after all, the surname of the principals of both businesses and, like the family, has a common origin over 90 years ago.
The Complainant alleges that the Respondent has no right to register a domain name incorporating FOYLES or FOYLES BOOKS. The Respondent denies this allegation, and refutes the Complainant’s submission that "the Respondent has made a deliberate attempt to trade off the (Complainant’s) reputation and trade mark rights in the name FOYLES." The Complainant’s reputation in the name FOYLES relates to the sale of books, especially second-hand, from its sole location in London, and its "Foyles Literary Luncheons".
The Complainant’s name, while known world-wide, may be conservatively described as unenviable. Numerous personal accounts have appeared in various media over the years describing the frustration experienced by individuals attempting to purchase books from, or make contact by telephone with, the Complainant’s shop in London.
The Respondent fairly claims a valid reputation in his and his family’s use of the name FOYLES since the founding of W&G Foyles. Without relinquishing any of the goodwill created in his and his family’s usage in trading and rights in the name FOYLES, the Respondent has been assiduous in making the distinction clear between his business and that of the Complainant, and has invariably referred any individuals that were unaware of the distinction that wished to contact the Complainant, to the Complainant.
In reference to an e-mail sent by Robert Foyle to Christopher Foyle on 12 February 1999, which was phrased in the language of familial goodwill, the Respondent takes exception to and denies the allegation that "It is clear from this that he accepted from the outset that the registration and/or use of at least this particular domain name would require the express permission or licence of the Complainant". At that time of writing, the Respondent was unaware of the Complainant’s intention to attempt to monopolise, through registration of trademarks, any goodwill in the name FOYLES owned by the Respondent and the considerable investment that the Respondent had made in the creation of a website. Nevertheless, and despite Christopher Foyle’s surprising response, the Respondent went further in his e-mail of 19 February in the spirit of good faith and generosity, to make the offer that, in deference to the concept of the shared nature of the name FOYLES and as a way to avoid customer confusion between the two businesses, that a page at <foyles.com> should show the addresses of both companies. This offer was ignored.
Later, after further correspondence, a "Deed of Settlement" was sent to the Respondent on 20 March which was, in effect, a demand that the Respondent surrender its domain names to the Complainant. This has been declined by the Respondent. The Respondent had been negotiating in good faith to settle the dispute regarding various domain names and was surprised to receive the complaint on domain names included in the settlement. These negotiations are continuing without the domain names.
The Respondent denies that it is preventing the Complainant from reflecting its trade mark, and denies that it has engaged in a pattern of conduct of registering domain names in which it appears to have no legitimate interest.
The Respondent has legitimately used the name FOYLE, or FOYLE'S, in reference to his present and past businesses in good faith, it being his own surname, as his father and grandfather had before him.
The Complainant has a website at the address: <foyles.co.uk>. This domain name appears to have been registered in August 1996. As of May 2000, no use of the domain name had been made. The Respondent submits that if before this year, the Complainant had made no effort to have a presence on the internet in its name, it is difficult to see how the complaint can be justified. It appears no attempt to register the domain name <foylesbooks.com> was made when the Complainant's own UK domain name was registered.
The Respondent denies that it is attempting to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. The Respondent denies the allegation that it has registered the domain name with a view to disrupting the Complainant’s business, or that it has intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion. The Respondent registered the domain name in good faith and is using the domain name in good faith.
6. Discussion and Findings
The issue whether the Respondent’s company, Foyle’s Books Ltd., has trade mark rights in the names FOYLE or FOYLES is presently pending before the New Zealand Trade Marks Office in opposition proceedings to the Complainant’s application to register those names as trade marks in that country. The panel has decided, pursuant to Rule 18, that it is appropriate for it to proceed to a decision notwithstanding those proceedings because:-
(i) it may be doubted whether those proceedings are "in respect of a domain name dispute that is the subject of" the present complaint (see Rule 18);
(ii) the Respondent agreed to submit to this administrative proceeding upon registering the disputed domain name;
(iii) under Rule 15, the panel is obliged to decide this case, unless it exercises its discretion under Rule 18(a);
(iv) neither party has asked this panel to suspend or terminate this proceeding under that Rule; and
(v) the Complainant has submitted to the jurisdiction of the courts of New Zealand in relation to any challenge the Respondent may mount to this panel’s decision;
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Numerous cases under the Policy have decided that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks: Cedar Trade Associates, Inc., v. Gregg Ricks (NAF93633); Bennett Coleman & Co. Ltd. v. Steven S. Lafwani (D2000-0014); SeekAmerica Networks Inc. v. Tariq Masood (D2000-0131) and Passion Group Inc. v. Usearch, Inc. (AF-0250).
Despite the opposition of the Respondent’s company, Foyle’s Books Limited, to the Complainant’s application to register FOYLES as a trade mark in New Zealand, there is no dispute that the Complainant has common law and/or registered trade mark rights in that mark in the U.K. and other countries. The Respondent’s claim also to have rights in that mark is considered under the heading Illegitimacy.
Identity or confusing similarity
It has been decided in many cases under the Policy that "essential" or "virtual" identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO case D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO case D2000-0102), holding disputed domain names confusingly similar to the trademark of the Complainant, despite the addition of generic words.
The addition of the descriptive word "books" to the Complainant’s trade mark FOYLES, which has been associated in the public mind since 1906 with the supply of books, does nothing to distinguish the disputed domain name from that mark nor to detract from the strong impression conveyed that the domain name belongs to the owner of the FOYLES mark. See L.L.Bean, Inc. v. ShopStarNetwork (NAF case FA0008000095404, September 14, 2000):
"Since the word ‘shop’ has to do with the Complainant’s business, when it is combined with the Complainant’s trade mark, consumers are confused and misled [by the Respondent’s domain name]".
The suffix ".com" is of no significance. See The Forward Association, Inc., v. Enterprises Unlimited (NAF case FA0008000095491, October 3, 2000):
"It should be noted that when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL, nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address".
This applies equally where a domain name is composed in whole or in part of a trade mark.
See also, for the approach adopted by the U.S. courts, Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sporty’s" and the domain name "sportys.com" – specifically, an apostrophe in the trademark and the addition of .com in the domain name – are "inconsequential", such that the domain name is "indistinguishable" from and "certainly ‘confusingly similar’ to the protected mark").
Evidence of actual confusion is irrelevant since the test for confusing similarity is confined to a consideration of the disputed domain name and the trade or service mark: Gateway, Inc., v. Pixelera.com, Inc. (WIPO case D2000-0109); The Forward Association (supra).
The panel finds that the disputed domain name <foylesbooks.com> is confusingly similar to the Complainant’s trademark FOYLES. The Complainant has established this element.
Paragraph 4(c) of the Policy sets out circumstances, any one of which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. (The Complainant has the burden of proving the absence of rights or legitimate interests).
As to subparagraph 4(c)(i), on February 12, 1999 the Respondent received an email from his cousin Christopher Foyle, to whom Christina, then quite frail, was handing over the running of the Complainant’s business. The email included this passage:
"Foyles has been the recognized trade name of W & G Foyle Ltd booksellers worldwide rather than any other company since its founding. We would be unhappy for another party trading as a bookseller passing itself off as/and or using our trade name Foyles and using any advertising or marketing medium, Internet or any other for this purpose."
That email responded to a communication from the Respondent concerning the domain name <foyles.com>. Nevertheless, the passage quoted constitutes sufficient notice to the Respondent of this dispute, for the purposes of subparagraph 4(c)(i) of the Policy. The disputed domain name was registered on April 22, 1999. Accordingly the respondent is not shown to have used or made preparations to use the disputed domain name before he had notice of this dispute.
As to paragraph 4(c)(ii), there is no evidence the Respondent, Robert Foyle, has been commonly known by the domain name "foylesbooks".
As to subparagraph 4(c)(iii), since the use which the Respondent is making of the disputed domain name is commercial, (by linking the web address www.foylesbooks.com to the online bookshop website www.robertfoylebooks.com,) this subparagraph has no application. See Hollywood Casino Corporation v. Go Call Inc., NAF case FA0009000095471:
"using the Complainant’s mark to divert internet traffic to an alternative site is not a legitimate, bona fide, or noncommercial use of the domain name".
The circumstances set out in paragraph 4(c) of the Policy are not exhaustive, however, and the critical issue in this case is whether the Respondent has trade mark rights in or has been commonly known by the name FOYLES. If so, the Respondent, as a bookseller, would undoubtedly have a legitimate interest in the disputed domain name.
The Respondent claims to have used "the name FOYLE or FOYLE’S [sic], in reference to his present and past businesses in good faith, it being his own surname, as his father and grandfather had before him." The Respondent also claims a valid reputation in his and his family’s use of the name FOYLES since the founding of W & G Foyles. He describes the name FOYLES as "the surname of the principals of both businesses and, like the family, has a common origin over 90 years ago."
It appears to the panel that there is an important difference between the surname of the Respondent and that of his father and grandfather before him, FOYLE, on the one hand, and the name FOYLES on the other, being that of the business originally founded by William and Gilbert Foyle and now owned by the Complainant. Having set up together a business enterprise under the name FOYLES, the two founders themselves could have been restrained under the law of passing off from trading as individual booksellers using that name, as distinct from their proper surnames, without the permission of the enterprise they founded or without sufficiently distinguishing their individual businesses from that of the enterprise. They could also have been restrained under trade mark law from infringing the trade mark of the enterprise. It is hard to see how the passage of time alone should enable Robert Foyle to do that which his grandfather could not.
In support of his claim to rights in the name FOYLES, the Respondent relies not on the passage of time nor only on the incorrect claim that the family surname is FOYLES. He relies also on:-
(a) the circumstances of the establishment and activities of Foyles Educational Limited;
(b) the claim that the Respondent and customers of Foyles Educational Limited and of Unifoyle Ltd, which took over the export operations of Foyles Educational Limited, called those businesses FOYLES;
(c) the claim that the Respondent and customers of Robert Foyle Books and Foyle’s Books Limited commonly referred to those businesses as FOYLES.
As to (a), it appears the business Foyles Educational Limited was established and that name was adopted with the permission of the Complainant’s predecessor, otherwise it is hard to see why its operations would have been accommodated at the Charing Cross Road premises for 43 years, even allowing for what have been described as FOYLES’ eccentricities.
Taking into account the eventual separation of Foyles Educational Limited from the business of the Complainant, there is nothing before the panel which appears to have conferred upon Gilbert, his son or his grandson the right to use the name FOYLES independently from the businesses of Foyles Educational Ltd, (with which the Respondent has no present association) or Unifoyle Ltd, nor is there any evidence that any of those members of the family ever used the name FOYLES as a trade mark without the authority of the Complainant prior to the events giving rise to this dispute.
As to (b), any use the Respondent or customers of Foyles Educational Limited and Unifoyle Ltd. may have made of FOYLES in reference to those businesses is irrelevant to the present case, which involves the current businesses established by the Respondent, Robert Foyle Books and Foyle’s Books Limited.
As to (c), having regard to the close similarity between the names FOYLE, FOYLE’S and FOYLES, and the phonetic identity between the possessive of the surname FOYLE and the Complainant’s mark, there would need to be clear evidence of use by the Respondent and by customers of the name FOYLES, as distinct from FOYLE or FOYLE’S before this panel could be satisfied either that the Respondent has trade mark rights in the name FOYLES or that his current businesses have been commonly known as FOYLES.
There is no evidence whatever before the panel to support either assertion in (c), despite the fact that, in its Notice of Opposition to the Complainant’s application to register the trade mark FOYLES in New Zealand, dated May 29, 2000, the Respondent’s company, Foyle’s Books Ltd., asserted ownership in that country of the trade marks "FOYLE or FOYLES or ROBERT FOYLE BOOKS" and use and promotion of those marks in New Zealand and overseas. The panel draws the inference from the Respondent’s failure, only seven months after that Notice of Opposition was filed, to produce to this panel the evidence upon which his company relies in claiming ownership and use of the trade mark FOYLES, that there is no such evidence.
The panel finds the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy specifies, non-exhaustively, four circumstances, any one of which shall be evidence of both bad faith registration and use.
As to subparagraph 4(b)(i), there has never been any intent on the part of the Respondent to sell the disputed domain name.
As to 4(b)(ii), although registration of the domain name necessarily prevented the Complainant from registering the same domain name, the evidence does not establish that this was the Respondent’s purpose. It is therefore unnecessary to consider whether the other domain names registered by the Respondent and by his company form a pattern of such conduct.
As to 4(b)(iii), the evidence does not establish that the Respondent registered the domain name primarily for the purpose of disrupting the business of the Complainant, being a competitor.
As to 4(b)(iv), in SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037). However, such a finding does not follow as a matter of course from proof of prior knowledge of the mark: Goldline International, Inc. v. Gold Line, (WIPO case D2000-1151, 4 January 2001).
Despite having found that the Respondent has no rights or legitimate interest in the disputed domain name, the panel is prepared to accept that the Respondent genuinely believes he has a right to use the name FOYLES as a trade mark in connection with his current businesses and to reflect that mark in a corresponding domain name.
However, in asserting that "the Respondent has rights in a trademark or service mark which is identical or similar to a trademark or service mark in which the Complainant has rights" (Response ¶6) and in asserting "the concept of the shared nature of the name FOYLES" (Response, p.7), the Respondent acknowledges that the Complainant also has at least some goodwill in that name. The Respondent’s emails of February 12 and 19, 1999 to his cousin Christopher over the domain name <foyles.com> also indicate an awareness on the part of the Respondent that the Complainant has some rights in the name FOYLES.
The Respondent is using the disputed domain name to route Internet traffic to a commercial website (robertfoylebooks.com) that promotes the supply of British books worldwide. These services are similar, if not identical, to those of the Complainant. The Respondent has made it clear on the <robertfoylebooks.com> homepage (to which the Internet user accessing the disputed domain name is redirected) that the business is not that of the Complainant. However, in offering similar services located at a site linked to a domain name that is confusingly similar to the Complainant’s mark, the Respondent stands to keep some proportion of the trade that, absent "initial interest confusion" (Footnote 1), would otherwise go to the Complainant.
See Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna,(WIPO case D2000-0869, September 25, 2000):
"The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion".
Having regard to the Respondent’s family background and intimate knowledge of the longstanding use of the trade mark FOYLES by the Complainant and its predecessors, the panel concludes that it was the Respondent’s intention in registering the disputed domain name and in linking it to the <robertfoylebooks.com> site to seek to benefit, to the extent possible, not merely from any goodwill that he genuinely believed he or his company might have in the name FOYLES but also to benefit from such of the goodwill in the name FOYLES as he knew belonged to the Complainant. The panel finds that, in this sense, the Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site, within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the panel finds the disputed domain name was registered and is being used in bad faith.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain name <foylesbooks.com> to be transferred to the Complainant
Alan L Limbury
January 13, 2001
1. Brookfield Communications Inc. v. West Coast Entertainment Corporation 174F.3d 1036, 1055, 50 U.S.P.Q. 1545, 1558 (9th Cir. 1999).